Patent Pending

My recent article on patent pendency was published this week on Slaw. For patents granted by the Canadian Patent Office in the first half of 2018, the duration a patent application was pending ranged from less than 6 months to over 18 years.

I am often asked by clients how long it will take to get their patent granted. The answer is, as with most questions asked of lawyers, “it depends”. Of the patents granted by the Canadian Patent Office in the first half of 2018, the time from filing to being granted ranged from less than 6 months (see CA2,976,719) to over 18 years (see CA2,360,927) – a huge range! Some of the time was outside the control of the patent applicant, such as due to backlog at the patent office, but there are many aspects of the patent process that affect the pendency at the patent office that are under the control of the patent applicant and their patent agent.

The Canadian patent office, as with most patent offices, has published pendency guidelines and service standards. CIPO reports (link) that it sends a first office action within 14 months of requesting examination on 95% of patent applications. There is some variation by the technology area with mechanical and chemistry applications generally processed more quickly than electrical/computer and biotech. There isn’t much an applicant can do about the backlog. In some jurisdictions, careful patent drafting can characterize an invention to put the application into a different art class that may have less of a backlog. As can be seen in the chart below, over half of patent applications which granted in the first half of 2018 in Canada take less than two and half years for a patent to be granted once examination is requested.

In Canada, the most important factor in the timing of obtaining a patent is whether to defer examination. Currently, a patent applicant can defer requesting substantive examination of a patent application by up to five years from the filing date. Under changes expected to come into force in 2019, this period of possible deferred examination will be shortened to three years. Of the patents granted in the first half of 2018, examination was requested as soon as possible for approximately a third of patent applications. For most of the rest of the application, examination was deferred the full 5 years. In other words, most patent applicants voluntarily delayed the processing of their patent applications by up to five years.

Instead of deferring examination, the applicant often also has several options for accelerating examination. In Canada, anyone can request a special order (and pay a fee) to accelerate examination of a patent application. This is actually rarely done but can be very effective in getting an immediate review of your patent application as well as faster turnaround on each office action. Only about 2% of the patents granted in the first half of 2018 in Canada had a special order to accelerated patent examination. The median time from requesting examination to grant was reduced by over a year, from about 2.4 years for regular patent applications to about 1.2 years for applications with a special order.

There are a couple of ‘free’ options for accelerating examination. The patent office offers to accelerate ‘green tech’ patent applications upon request. Canadian patent applications can also be accelerated under the Patent Prosecution Highway (PPH) program where a corresponding patent application has been approved in any of a long list of other jurisdictions. Under these programs, the patent office often requires the applicant to respond within 3 months in order for the application to stay within the accelerated program, which also speeds up the overall time to grant.

Other jurisdictions also have programs for accelerating examination. For example, in the United States, applicants can request Track One priority examination and before the European Patent Office under the PACE program.

In most cases, a patent applicant has six months to respond to reports or requistions from the patent office. This includes office actions issued by a patent examiner raising objection to the patent application such as that the claims are not novel or lack inventiveness. This also includes the payment of a grant/final fee once the examiner has allowed a patent application. Responding to these patent office correspondence prior to the six-month deadline means that the patent office can begin the next step in the process sooner. Similarly, most Canadian patent applications claim priority from foreign filings or enter national phase from PCT applications. In both cases, applicants have up to 12 months (priority) or 30 months (PCT, or 42 months with late fees) to enter Canada, but the patent applicant could file earlier if they want to advance their case in Canada. For PCT applications entering national phase in Canada, over 85% of patent applicants enter national phase at the 30 month deadline – fewer than 10% enter national phase in Canada more than 2 months prior to the 30 month deadline and fewer than 5% enter during the late payment period between 30 and 42 months.

There are many reasons why a patent applicant may want to speed up, or slow down, the patent application process. Often early stage companies are testing the market and raising funds so may want to defer costs of prosecuting patent applications until after commercialization or further funding is raised. Even for established companies, it may be some time before an invention is realized commercially and a decision can be made whether pursing patent protection is warranted and the particular form of the patent claims that may be the most valuable. Deferring examination can reduce the overall cost if by waiting in Canada an allowance in another jurisdiction can be used to shorten the process of examination in Canada. Also, if an applicant has doubts about the allowability of their invention, they may want to keep ‘’patent pending’ status for as long as possible to defer competitors rather than have their patent application immediately rejected.

On the other hand, accelerated examination can be crucial to getting an early allowance permitting enforcement against rivals. Early allowance can also be used to accelerate the patent prosecution process in other jurisdictions.

Having many paths available to patent applicants allows an applicant to pick and choose what options make the most sense for their situation. Not every patent applicant wants a granted patent as soon as possible, given the costs and risks. On the other hand, some applicants are willing to pay the fees and accept the risks and benefits of trying to get an immediate allowance and granted patent.

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I am a partner at DLA Piper (Canada) LLP practicing in the area of intellectual property. Material on this website are my own views and do not reflect the position of DLA Piper (Canada) LLP, any of its member firms around the world, or any of its clients. IPPractice.ca grew out of my hobby to gather and share interesting updates on intellectual property to friends and colleagues. This website does not provide legal advice, and should not be relied upon. Hope you enjoy the site - Alan Macek